Background
Therme Development, a Cyprus-based company operating thermal spa and wellness facilities, held Canadian trademark registrations for marks incorporating the word “THERME.” Nordik Spa Village Chelsea, a Quebec-based spa operator, challenged these registrations as invalid, arguing that THERME was descriptive of spa services.
The central issue was whether THERME — an English-language word derived from the Greek for “heat” — should be assessed for descriptiveness in both English and French under Canada’s bilingual trademark framework. When pronounced in French, THERME sounds essentially identical to “thermes,” the standard French word for thermal baths and spa facilities.
The Court’s Holding
The Federal Court of Appeal upheld the invalidation of Therme’s trademark registrations. The court confirmed a fundamental principle of Canadian trademark law: descriptiveness must be assessed based on a mark’s phonetic meaning in both of Canada’s official languages. Because THERME, when pronounced in French, is descriptive of spa services, the registrations could not stand.
The court further held that design elements accompanying the THERME word mark did not overcome the descriptiveness finding when the word element dominates the mark as a whole. Consumers encountering the mark would perceive the word element first, and no amount of stylistic embellishment could render a descriptive word inherently distinctive for the services it describes.
Key Takeaways
- Canadian trademark law is truly bilingual. Marks must survive descriptiveness analysis in both English and French. A word that appears distinctive in one language may be immediately descriptive in the other — and that is fatal to registration.
- Phonetic equivalence matters. The test is not limited to exact translations. If a mark sounds like a descriptive word in the other official language, it will be treated as descriptive regardless of its orthographic origin.
- Design elements cannot save a descriptive word mark. When the word component dominates a composite mark, graphic elements do not cure the descriptiveness problem. This is consistent with Canadian and international trademark principles but is now reinforced at the appellate level.
Why It Matters
This decision is a critical reminder for international businesses seeking Canadian trademark protection: Canada’s bilingual legal framework imposes a unique constraint that does not exist in most other jurisdictions. A brand name that successfully registers in the EU, the UK, or the United States may be refused or invalidated in Canada if it is descriptive in either English or French. Companies operating in the wellness, hospitality, food, or luxury sectors — where French-language descriptive terms are common — should audit their Canadian trademark portfolios for bilingual descriptiveness risks.